Tag Archives: independent inventors

The Slice-n-Stand is designed to keep leftover cakes slides standing upright during transport, delivery, and storage. The stand fits into a standard cake storage container to provide support to the leftover slices of cake. The stand is designed to prevent the cake slices from slipping, sliding, and tipping. The “L” shaped stand includes an adjustable “hinge” which can accommodate different sizes of cake slices. The hinge locks into place to keep the cake slices stable. Additional hinges can be added to provide support for multiple and varied slices of cake. When the party is done and the guests are headed home, there always seems to be leftover cake. Usually you might wrap the slices in plastic wrap, but that makes a mess and the icing sticks to the plastic. Or, you might use storage containers, but usually this means stacking the slices on top of each other, crushing the cake, and results in the need for cleaning more dishes and storage containers. The Slice-n-Stand keeps leftover cake slices upright and prevents the cake from slipping, sliding, and tipping. No additional storage containers or plastic wrap is needed to keep the cake fresh and in tact. The Slice-n-Stand is designed to fit into a standard cake storage container, so after the party, you can just slide the Stand underneath the leftover cake and keep it safe and in tact while you return home or store the leftovers for later. If you want to keep a small portion of cake, the Slice-n-Stand adjusts to accommodate these slices using a specialized ‘hinge’. The hinge locks into place to provide additional support.

Barbi Honeycutt made it on this show. She is one of the inventors from my UMI Inventors Meetup Group and one of my clients. She got a 94% Thumbs up from the listening audience. She has more views and shares of her show as shown on Facebook then any other for her week and for the month of January.Thanks for your support.

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Patents Pick-5Every patent examiner has a list of patents that hold special meaning to him or her, from the first application they examined to the one for a groundbreaking new technology.

As I get ready to retire from the United States Patent and Trademark Office (USPTO) after 24-plus years, I have been looking back at the many people who have been part of my life during my career. It has been a privilege to work with a number of great examiners, managers, attorneys, agents, and so many wonderful and inspiring inventors. I have seen many interesting and not-so-interesting inventions and patents. These five have special meaning to me.

Note: This article is part of an ongoing series detailing some of the Inventors Eye staff’s favorite patents. For each article, the writer selects five patents under a given theme. This list is from Senior Advisor John Calvert. You can read more about John’s career helping independent inventors in our April Spark of Genius.

U.S. Patent No.4,951,357Stop Motion Apparatus for a Roving Drafting Device of a Textile Machine

My career as an examiner started in 1990. After two weeks of training, I began examining real applications in the technical area of my college education and work experience: textiles and knitting technology. The very first application I sent a Notice of Allowance for was a stop motion device that helps eliminate excessive fiber waste when a particular part of the machine fails to have the proper amount of fiber moving through the device. While other stop motion devices were previously known, I found that the improvement in this device was new and nonobvious. And so it began.

When I first read this application, I knew it was different from any other I had ever examined. The subject matter was intriguing; it used mathematical calculations to determine the proper depth of penetration of a needle, so that fiber could be transported without breaking or slipping back and entangling. The invention was intended to create a brake pad disk for use on an aircraft. After extensive searching, I failed to find any patents that disqualified the application. I did find one article in Russian that appeared to show that the invention was not new. However, after a complete translation, I discovered the article did not describe the same invention. For me, this application was one the most difficult and most rewarding.

U.S. Patent No.5,590,548Circular Knit Legged Panty Having Knit-in Shaping Panels and a Blank and Method for Making

This was one of many garment patents I examined during my career. The technology provided areas within the legged panty that had more elastic properties for increasing pressure, which resulted in a slimming feature. The real significance of this application for me is not the technology but the attorney who filed the application. Before I joined the USPTO, I worked in a job that I hated. I called my graduate faculty mentor from college for guidance, and he suggested I talk with an examiner at the patent office to inquire about open positions. This eventually led to my work at the USPTO. As it happens, the examiner I spoke with eventually left the office to work as an attorney. She is the one who filed this application. The circle was complete, so to speak.

U.S. Patent No.5,996,127Wearable Device for Feeding and Observing Birds and Other Flying Animals

Shortly after I became a supervisory patent examiner in 1998, a new examiner showed me the application that would eventually issue as U.S. Patent No. 5,996,127. It was for a helmet that had a holder for a bird feeder and a place to mount a camera. As soon as I looked at the application I knew it was a candidate for the “Patent of the Month” display. The display showed the most “interesting” issued patent for each month and was placed where almost every patent examiner, manager, and executive would see it. Nobody wanted a patent they had examined to make the display. Once we found there was no way to reject the application, I got a primary examiner to sign with the junior examiner. It did make Patent of the Month, but we all had a good laugh.

My first article in Inventors Eye was about the invention described in U.S. Patent 8,151,720. I met the inventor at the Minnesota Inventors Congress and wrote about how she came up with her invention. The patent issued about two years ago, allowing the inventor to move forward with marketing and protecting her device. While the invention is essentially a sewing needle, the technology she used in engineering the needle allows for a great advancement in that particular technology. Her invention makes it easy for anyone to thread a needle, even folks with large hands and weak eyes like me.

My time at the USPTO is coming to an end. However, my memories of those I have worked with for these many years and have met along the way will stay with me forever. Thank you for allowing me to be part of your exposure to the world of intellectual property.

A centralized listing of major Patent Application Initiatives is now available via the USPTO website that provides applicants with access to information on several patent initiatives designed to advance and support the examination process.

Applicants now have a single website location to compare the various patent application initiatives that are available prior to examination, during examination, or after close of prosecution. Applicants can easily evaluate and contrast the benefits of participating in patent initiatives using a comprehensive matrix of initiatives and convenient links to detailed information pages. The website also provides direct access to applicant assistance for addressing questions about these initiatives.

Throughout recorded history most people who have wanted a household article have bought or bartered it from someone else – in past times an artisan or trader, more recently a seller of mass-produced products. With few exceptions (such as some clothing) it is rare that any of us make such articles for ourselves these days. That may soon change. Thirty years ago only dedicated enthusiasts would print their own photographs or edit and reproduce their own newsletters. The advent of the home computer, and in particular of low-cost high-quality printers, has now made such things simple and commonplace. Recent developments in producing affordable and hobbyist-friendly printers that can reproduce three-dimensional rather than just flat objects may mean that printing a toast-rack or a comb becomes as easy as printing a birthday card.

Any lawyer familiar with copyright and trade mark law can see, however, that printing one’s own birthday cards could, depending on the source and nature of the images used, infringe a number of intellectual property (IP) rights. Tempting as it may be to copy and use a picture of a well-known cartoon character, the resulting cards would very likely be an infringement of the copyright and perhaps trade marks owned by the relevant rights holder. But what if someone uses a printer capable of producing a mobile phone cover bearing such an image? Or reproducing a distinctively-styled piece of kitchenware? What about printing out a spare wing-mirror mount for your car? Do these uses infringe IP rights?

In the first part of this paper, we review the history of 3D printing and describe recent developments, including a project initiated by one of the authors to bring such printers into the home. We then examine the IP implications of personal 3D printing with particular reference to the bundle of rights that would typically be associated with a product that might be copied.

2. Personal 3D Printing: The Technical Aspects of Home Manufacturing

2.1. A Brief History of Manufacturing

People have three ways to make solid objects:

Cutting shapes out of a block of material;

Adding material piecemeal to build up shapes; and

Forming material that is liquid or plastic into the required shapes that then set.

All forming processes are secondary in the sense that the dies and moulds for them must initially be cut or built by one of the other two primary processes. Pre-industrial examples of these three are carving wood, bricklaying, and moulding a jelly.

Since the industrial revolution, an enormous number of variations on these three techniques have been developed and pre-industrial techniques have been much refined. Cutting and forming have, in particular, received a great deal of attention, resulting in sophisticated lathes and milling machines for cutting, and injection-moulding and die-casting machines for forming.

Just after the Second World War, John Parsons invented the idea of numerical control.1 In this, a manufacturing machine has all its parameters and variables continually controlled by a computer, allowing a previously hand-controlled process to be completely automated. A typical numerically-controlled machine tool is a lathe or a mill that can produce a complicated-shaped part from a simple block entirely without human intervention. This idea has been called the Second Industrial Revolution, and – directly or indirectly – it is the basis of virtually every engineering product that is made and sold today.

Since the creation of the microcomputer in the late 1970s the cost of numerically-controlled machine tools has fallen dramatically and it is now possible for organizations of modest means (such as schools) and also private individuals in the developed world to own lightweight ones. However, the vast majority of all these machines – heavy and light – are still cutting machines, as opposed to additive or moulding machines.

Numerically-controlled cutting machines suffer from an inherent problem: given a computer model of a shape to be made, it is extremely difficult to compute the paths that the cutting tools have to follow in order to make that shape automatically. The more complicated the shape, the more difficult this problem becomes. Further, it is straightforward to design shapes that are perfectly valid three-dimensional objects but that cannot be cut out at all. Almost all these problems stem from the fact that the tool doing the cutting and the device attaching it to the machine must not strike any part of the object being cut except at the point where the actual cutting is happening.

2.2. 3D Printing

Until the late 1970s the alternative primary manufacturing idea – adding material – had received comparatively little attention (except in the electronics industry for chip manufacture, where it was, and still is, ubiquitous, if microscopic). But in 1974 a joke was written and in 1977 a patent was granted that caused that situation to change.

The joke was by David Jones, writing his column under the pen-name “Daedalus” in the New Scientist.2 He made what he imagined was a tongue-in-cheek proposal that one could shine a laser through a vat of liquid plastic monomer and cause it to solidify along the path of the beam. The photons of light might thereby be made to initiate the covalent cross-linking of the liquid monomer to form a solid polymer. He further proposed that, if the wavelengths were adjusted appropriately, the cross-linking could be made to happen only where two beams intersected, resulting in an intense spot of energy at one point, and that – by computer-controlled mirror deflection – that intense point could be made to trace out the volume of a required solid object.

The patent was granted in 1977 to Wyn Kelly Swainson for essentially the same idea, though he had originally filed the patent well before the appearance of Jones’s piece.3In Swainson’s system the laser caused covalent cross-linking at the surface of the liquid monomer and the object being manufactured rested on a tray that was gradually lowered into the vat.

This was the start of the 3D printing industry, which engineers sometimes call the rapid prototypingindustry. (The latter term has become less current over the last few years – the field is evolving rapidly.) It was called “rapid” because one-offs could be made much more easily and quickly using it than by conventional numerically-controlled machining and it was called “prototyping” because it was too slow and expensive to be used for production (it could not compete with injection moulding for making many copies of a single item, for example).

The primary reason that 3D printing technology was (and is) so easy to use was that it completely eliminated the tool-path calculation problems of numerically-controlled cutting machines. Because parts are built up layer by layer, there is always a flat-topped surface with unrestricted access for the laser (or other solidifying or depositing device) to gain access to build upon. This makes it very simple to write a computer programme to control the machine from a computer model of the shape required. There are other advantages (and disadvantages) to 3D printing, but this is the most significant one.

Although it is typically slightly less accurate than cutting, 3D printing is capable of manufacturing more complicated and intricate shapes than any other primary manufacturing technology. Most 3D printing technologies work using plastics but technologies such as selective sintering of metal granules have allowed the printing of metal shapes4 and there are systems that can work with ceramics.5

2.3. Home 3D Printing

At the time of writing, the lowest-cost conventionally-made and marketed 3D printing machine (the SD-300 made by Solido Ltd in Israel) was being retailed at about €12,000. Machines range in price from that up to around €300,000 and a typical mid-range machine might cost €40,000. In quick succession after Swainson’s patent, all the obviously possible ways of making objects by adding layers under automatic computer control were patented. Those early patents are now expiring but patents for newer 3D printing techniques continue to be issued.6

One of the technologies developed was fused-filament fabrication.7 This is essentially a computer-controlled glue gun. Molten plastic is extruded from a fine nozzle and laid down on a flat plate by scribbling with the nozzle to form the bottom layer of the object to be made. The plate then drops a small distance, and the next layer is added. Because the plastic is molten when it emerges from the nozzle the second layer welds to the first, and in this way complete three-dimensional solids can be built. This is a comparatively simple technology that requires no hard-to-make parts (such as a laser).

In 2004 Adrian Bowyer realised that 3D printing was such a versatile technology that it ought to be possible to design a fused-filament fabrication 3D printing machine that could manufacture a significant fraction of its own parts.8 Conventional industry has little use for this idea: why sell a machine to your customers that means that they never need to come back to you to buy another, never need to buy spares, or even that allows them to go into production themselves in direct competition with you? But owning such a machine would have real advantages for people in general: anyone who had one could use it to make things, and could also make another such machine and give that to a friend. This is an interesting example of a failure of the market: such a self-replicating machine is an object that people would value, but that it is in no one’s interest to sell. For these reasons it was decided to make the machine and to give all its designs away free under the GNU General Public Licence on the web.9This was the start of the RepRap project. RepRap is short for Replicating Rapid-prototyper.

RepRap has been a significant success, and is now in its second version (Figure 1).

Figure 1. RepRap Version II, “Mendel” The white part on the blue tray is a component of the machine itself. It was printed from the model depicted on the computer’s screen.

From the beginning RepRap was conceived as a machine that would be owned and used by people in the home to make things, as well as by industry. The cost of all the materials needed to make a RepRap is low – about €400 – bringing it well within the budget of individuals in the developed world (as well as small communities in the developing world). RepRap makes items at a slightly lower quality than the commercial machines do, but at about 1 per cent of the cost.

Any development or improvement of RepRap design, software or electronics arises out of its users’ own initiatives. There is no central institution giving directions: users themselves invest time and thought in the evolutionary process of RepRap design. If they inspire other users they can all team up and combine their efforts. Because of the lack of deadlines for developmental goals, progress is very wide ranging, but it is also admittedly slower than in industrial R&D departments. However, personal ambition to realise their own ideas for the project drives the progress of the users’ work. Involving users in product design by providing tool kits has become more important in recent times.10

The reactions of industry to RepRap have been twofold: the conventional 3D printing manufacturers have (to the best of the authors’ knowledge) ignored it, but there has been a flurry of garage start-ups (for example Bits from Bytes Ltd in Bristol and MakerBot Industries LLC in New York) making very low cost machines that are based on RepRap technology. There is also another significant open-source 3D printer: the Fab@Home machine, which was inspired by RepRap.11 Unlike RepRap, these machines do not copy themselves. They are however all able to make RepRap machines, as are almost all the large-scale commercial 3D printing machines. The asymmetry that this introduces into the population dynamics of 3D printing has not escaped us.

Many companies and organisations have bought these low-cost RepRap derivatives or have built RepRap machines, but by far the greatest majority of owners and users are private individuals. MakerBot runs a popular website (www.thingiverse.com) where anyone may upload and download designs of a great range of items to be manufactured by 3D printers for free.

As technology has become more miniaturised, the possible functionality of a single product has massively increased. This is, of course, useful and space-saving. On the other hand these versatile devices can, because of their large functional content, be rather complicated to handle. This is not always in the interests of the customer, as seen in Cooper.12 Additionally, often not all the functions are used by customers.13Home 3D printing technology provides a way of manufacturing customised objects which have precisely the features an individual user needs.

All this may be heading towards a world in which people do not buy consumer goods any more but instead download them from the web and print them themselves. They will be able to customise them at will and may avoid some of the environmental and monetary cost currently entrained by the (often global) physical transport of manufactured goods; indeed, work is in train to make RepRap run on home-recycled plastic which would further reduce such costs. In particular, the ability of a 3D printer to, in principle, print a copy of itself, and for both machines to print further copies and so on, suggests that the cost of 3D printing may rapidly fall to the point where it becomes a widely-available technology.

Of course, having many people making few items in the home, instead of few people making many items in factories, is against the idea of economies of scale. But economies of scale are not universal: in the past people took clothes to central laundries to have them washed; now people use their own washing machines. Today electricity is generated in 2 GW power stations tomorrow it may be generated by individual photovoltaics on everyone’s roofs. And industrial printing presses offer far greater economies of scale than the home inkjet printers mentioned in the first paragraph that are – for many types of printing – replacing them.

What might this 3D printer be useful for? Working just in plastic would limit it to producing items not requiring great strength or heat resistance, whilst the fabrication volume would preclude production of large objects (other than in parts). However, as mentioned above, there is a great deal of active research going on to extend the range of materials that these low-cost systems can work with. There are many potential applications.

Spare Parts. Many appliances require unique and often expensive spare parts. Often these are small, made of plastic and relatively simple design, and would be amenable to domestic fabrication. Examples familiar to the authors include door parts for washing machines,14 lids for food processors15 and camera lens accessories.16 Significantly, provision of third-party spares has led to many IP disputes.17

Craft and Hobby Items. Craft hobbies often require plastic moulds; as with appliance spares, these are often expensive but could be produced with a 3D printer.18 A 3D printer could equally produce items directly, such as model figures for war-gaming19 or specialist add-on parts for model-making.20

Unique Requirements. A 3D printer, allied with user-friendly design software, would allow the ready creation of bespoke items. The RepRap website cites the fabrication of a unique bracket to allow an MP3 player to be attached to the coin-holder in a car dashboard.22 Individually-tailored body-fitting items such as frames for glasses could be produced, an extension of the use of 3D printing to make tailored medical implants.23

Fashion Accessories. Existing 3D printing systems have been used to make jewellery.24 Personal 3D printers could add a new dimension (literally) to many forms of fashion art, and allow customisation of personal accessories.

Although discussion so far has assumed home use of low-cost 3D printers, they may appear first in commercial or educational settings such as copy bureaux or schools, just as photocopiers were more common in such venues before combined scanner/printers brought them into the home. These different forms of use are very significant as there are exemptions against infringement of some IP rights for personal or non-commercial use, but not in other circumstances.

3. Introduction to Intellectual Property Implications

Might, however, the promise of low-cost 3D printing be constrained by IP law? Surely, it might be thought, home 3D printing of household items might infringe such rights as copyright, design right, trade marks or patents? The second part of this article will examine such questions. To illustrate the legal issues in question it will consider a hypothetical manufacturer, Acme, which produces a range of goods. Acme’s products are protected by various IP rights, such as design right, copyright, patent and trade mark. A consumer, Bridget, owns various Acme products, but finds that additional items, or spares or accessories for the ones she already has, are expensive. Being a 3D printing enthusiast, she creates 3D designs for such items and uses her personal 3D printer to print them out. She also shares her designs over the Internet with Charlie, who downloads them and prints his own ersatz Acme products. What of Acme’s rights, if any, have Bridget and Charlie infringed?

Such questions have received surprisingly little attention. A comprehensive literature search for legal references to “3D printing”, “rapid prototyping” or related terms found few matches; one referred to the copyright in 3D printing reconstructions of archaeological finds25 whilst another briefly noted 3D printing as facilitating the overseas manufacture of patented products.26 Even searching within 3D printing engineering journals found only one article considering the prospect of widespread Internet-enabled dissemination of design files,27whilst the sole relevant UK case report concerned ownership of copyright in commissioned models; their production by 3D printing was entirely incidental.28

3.1. Aim and Legal Assumptions

Sections 3 through 7 of this paper are a first attempt to fill this gap. Based on the LLM dissertation of one of the authors (SB) they aim, from the perspective of EC and UK IP law,29 to identify where widespread low-cost 3D printing may impinge on IP rights or where IP law may constrain its development. Perhaps surprisingly, under UK law it transpires that in the scenario presented Bridget and Charlie may not have infringed Acme’s IP rights. Purely personal use of 3D printing to make copies of household objects and spare parts does not infringe the IP rights that commonly protect such items, such as design protection, patents or trade marks. However, there are areas, such as the reproduction of artistic works, where IP rights such as copyright may be infringed. The advent of low-cost 3D printing may therefore pose challenges to several communities: manufacturers, who may be unable to enforce design protection against private users of 3D printing; artists, who may see a new forum for infringement of works previously difficult to copy, and users of low-cost 3D printing, who may face confusion as to what is legitimate and illegitimate use of the technology.

3.2. Intellectual Property Rights and 3D Printing

There are four main classes of IP rights that may be infringed by using a 3D printer, which may be divided into those which require registration and those which arise automatically (unregistered rights):

Copyright is an unregistered right that protects mainly artistic and creative works.

Design Protectionexists in both registered and unregistered forms and protects the distinctive shape and appearance of items (in particular those that are mass-produced).

Patent is a registered right that protects novel and innovative products such as mechanisms or pharmaceutical compounds.

Registered Trade Marksserve to inform consumers of the origin (and by association, reputation) of goods.

English common law also provides the action of Passing Off against acts that might confuse customers as to the origin of goods.

This paper will briefly introduce each right and focus on the extent to which it may be infringed by use of a 3D printer and the potential legal defences for such infringement. More detailed discussion may be found in relevant educational and practioner texts, to which reference will be made as appropriate.30 These rights interact and overlap; in particular the interaction between design protection and copyright has been the subject of much judicial interpretation. It is therefore convenient to consider design protection first.

4. Design Protection

Design protection protects the appearance of items, especially commercial products that might not otherwise be protected by patent or copyright law. Design protection may apply to relatively simple products, to components of more complex ones, or to the overall appearance of such “complex products”. In domestic law there are two main forms of design protection: registered design and unregistered design right (UDR). In the wider European context, registered designs may also be registered with the Community Design Register, whilst there is a short-duration unregistered Community design right (UCD). This discussion will concentrate on registered design (for which the domestic and Community provisions are now virtually identical) and UDR.

4.1. Registered Design

The Registered Designs Act 1949 (as amended) provides that registration of a product protects its “appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation”31where a “product” is any industrial or handicraft item.32 The requirements for the registration of designs (such as novelty and individual character) will not be examined in detail;33 however, some of the constraints on what may be registered are relevant to issues arising from 3D printing of spares or parts for repair of a product.

Component Parts. A component part of a complex product may only be protected as a registered design if it is both visible to the user in ordinary use (which excludes maintenance or repair) and is of novel and individual design.34 Many spare parts for cars or domestic appliances will be hidden in everyday use whilst many others, even if normally visible, may be of commonplace design, such as a pipe or washer.35

Designs Dictated by Technical Function. Features of a product dictated solely by technical functionality may not be protected by registered design.36 This constraint was considered by the ECJ in Philips v Remington37 where Colomer AG opined that protection would not be available where the design was the only way of achieving the required function. Cornish contrasts this with the decision of the House of Lords inAmp v Utilux38 under the previous UK legislation where it was held that whilst an electrical terminal could have been designed in various equally effective ways, all would have been dictated by technical function and so been unregistrable.39 (It would now be unregistrable as an invisible component part.)

“Must Fit” Exception. A design or design element is not registrable if it comprises “features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function”.40 There has been little if any judicial consideration of this point, but by analogy with similar provisions for unregistered design right this provision will exclude many spares and accessories from protection if their shape is determined by the need to connect to or fit into or around another product.

The effect of these exemptions is that many items attractive for 3D printing will not be protected as registered designs. Many spare parts are likely to be components or fall under the “technical function” or “must fit” exemptions. The latter also applies to the shape of accessories and customisation items such as covers for mobile phones (but not, as noted below, to copyright artwork decorating them). Furthermore, even if a spare part escapes these exemptions and is protected as a registered design, such protection is not infringed by its use for “the repair of a complex product so as to restore its original appearance”.41 This would cover the 3D printing of a part such as a car wing panel that was normally visible and not wholly constrained in design by its function or fit, but which had to be replicated in order to maintain the vehicle’s original appearance.

Even where a registered design is copied via a 3D printer this would not be an infringement if it were done “privately and for purposes which are not commercial”.42 Both criteria must be met; it is insufficient that copying is not done for profit. Purely personal use of a 3D printer to make items will thus not infringe a registered design, so long as the purpose for which the item was made was genuinely non-commercial. In the introductory scenario therefore, even if Acme’s product is protected as a registered design, neither Bridget nor Charlie infringe that design by making a copy for personal use (although this may not be so if, say, Bridget makes an item for use in paid work from home). However, use in other settings, such as a repair shop, will have to avoid registered designs if it is not to infringe them, unless the “complex product repair” exemption applies. For non-private educational purposes, there is a “fair dealing” exemption,43 but this only applies where the use does not prejudice normal exploitation of the design,44 e.g. by substituting for purchase of the item itself. So if Charlie works in a school and uses Acme test-tube stands, if these are registered designs he could not legitimately 3D-print copies to avoid buying new ones from Acme.

4.2. Unregistered Design Right

UK UDR was introduced by the Copyright, Designs and Patents Act 1988 to help resolve anomalies in industrial design protection regarding the supply of third-party spare parts (especially for cars) that had culminated in the House of Lords decision inLeyland v Armstrong.45 UDR provides protection akin to registered design, but rather than requiring registration it arises automatically, as with copyright. Like copyright it is therefore only effective against actual copying.46 As an unregistered right its subsistence will be a question of law in each case.

UDR subsists in the shape and configuration of an item, but not its surface decoration or method or principle of construction.47 It also excludes features that are required for it to be “connected to, or placed in, around or against, another article so that either article may perform its function” or which “are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.”48The “must fit” exception is similar to that for registered design, whilst the “must match” exception is analogous to the “repair of complex products” provision.

Originality. To qualify for UDR, a design must be original, defined as not being “commonplace in the design field in question at the time of its creation”.49In Farmers Build v Carrier50 Mummery LJ noted:

The designs are “original” in the sense that they are the independent work of the designer of the TARGET machines: they have not been simply copied by him from the GASCOIGNE or SUDSTALL machine….Time, labour and skill, sufficient to attract copyright protection, were expended by Mr Hagan in originating the designs of the individual parts. Similarly, he originated the assembly or combination of those parts in the TARGET machine as a whole.

Laddie J’s remarks illustrate that UDR may subsist in individual parts of a design, the design as a whole, or both. Consequently, an allegedly infringing design may be analysed by being broken down into component parts, some of which may be held to infringe UDR whilst others do not. The meaning of “design field in question” was considered in Lambretta v Teddy Smith51 where Jacob LJ held it to be the range of designs with which the designer of the item in question would be familiar.

Method or Principle of Construction. In Rolawn v Turfmech52 Mann J summarised prior case law as indicating that this provision prevented UDR subsisting in what he described as abstract, generalised design concepts. Under Mann J’s interpretation aspects of design dictated solely by manufacturing technique or necessitated by sound engineering design will be likely to fall within it. As noted by the Court of Appeal in Landa & Hawa International v Azure53 this provision seeks to prevent a designer gaining a monopoly over a particular way of making a type of product.

“Must Fit” Exception. The “must fit” exception for UDR has been the subject of considerable judicial consideration. In Parker v Tidball,54 the disputed designs were for mobile phone cases, which had both to fit around the phones they were designed for and to allow access to keyboards and displays. Robert Englehart QC adopted the approach of breaking each design down into its components in order to assess whether each element’s design was commonplace and, if not, if it was constrained by the need to fit the phone or if alternatives would have been possible. In Dyson v Qualtex55the exception was held to apply to those elements of spare parts that were shaped so as to allow them to conform with the product they were to be fitted to. The “must fit” exception has even been extended to designs that conform to parts of the human body, such as contact lenses in Ocular Sciences56 – although in Amoena v Trulife57 it was held that breast implants were not caught by this exemption, as they were too flexible to be considered “constrained” in their design.

“Must Match” Exception. The “must match” exception is analogous to the “complex repair” provision for registered design. The example of a car wing panel illustrates it well, and has been cited as epitomising this provision, e.g. by Jacob LJ in Dyson v Qualtex. Dyson concerned “pattern parts”, spares which replicated the appearance as well as function of the original manufacturer’s parts, in that case for vacuum cleaners. Jacob LJ distinguished between spares for cars, where matching overall appearance was paramount, and those for more mundane items – such as vacuum cleaners – where it was less so. Without clear Parliamentary intent to exclude spares from UDR altogether, he held that the “must match” exception applied only in the former instance.58

How, then, does UDR affect the use of 3D printers to make copies of items in which it might subsist? The operative phrase is “might subsist”, as being an unregistered right it will be for the owner of the original item’s design to assert UDR. The factors listed above will determine whether UDR subsists – potentially not if the item is a commonplace design or has a shape and configuration determined by the item it “must fit” onto or around.

For 3D printing of spares, the “must fit”, “principle of construction” and “original design” requirements mean that UDR is unlikely to subsist in items that are of mundane design (c.f. the example of pipes or washers noted earlier) or where shape is dictated by the need to fit against another element of a product or is necessary for proper operation. However, as emphasised in Dyson, UDR is by no means excluded for spares, and in particular closely-matching “pattern spares” may fall outside the “must match” exception if they are destined for products where appearance is not critical.

The “must fit” exception would also apply to items such as customised covers for mobile phones although, as was noted with in the discussion of registered designs, this would not cover the use of copyright artwork as surface decoration. But of the other forms of items attractive for copying with a 3D printer many, such as craft and hobby items, would be protected by UDR and so reproducing them may infringe it. Whether they would depends on the statutory exemptions.

For UDR there is no positive provision in CDPA 1988 corresponding to that in RDA 1949 allowing private, non-commercial reproduction of a registered design. Instead, s 226(1) provides that:

(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes—

(a) by making articles to that design, or

(b) by making a design document recording the design for the purpose of enabling such articles to be made.

On its construction s 226(1) implies that the exclusive right does not apply to non-commercial use. This interpretation is supported by Copinger and Skone James, which notes“it seems clear enough that…a person who (for example) makes articles to a design intending to use them domestically does not thereby infringe design right”.59 In the Acme scenario, neither Bridget nor Charlie infringes any UDR subsisting in Acme’s products by 3D printing copies for personal use.

The authors of Copinger dismiss the impact of this provision, commenting that “as a person is unlikely to make many articles with a view to non-commercial purposes, it should in practice create few problems.” This may be true even with personal 3D printers, but what might change is that many more people will be in the position to make such articles. Furthermore, and in contrast with the situation for registered designs, there is no requirement that non-commercial use also be private. Indeed, by confining infringement to commercial use, defined as making an article or design document with a view to selling or hiring it in the course of business,60 the legislation appears to make all non-commercial uses non-infringing. This would include use within educational establishments, or bureau services where a 3D printer is made available for members of the public to use. CPDA 1988 provides that authorising infringement (which, by analogy with copyright, includes permitting infringing activities) is itself primary infringement of design right.61 But this only extends as far as acts that are themselves infringing, which non-commercial use is not. This is a fine point, and it may be argued that if a charge is made for such a service (e.g. at a commercial copy bureau) then the article is actually being made for the purpose of sale; equally, a private school or commercial training centre may well be “commercial” in this sense. If no charge is made though, for instance in a publically-funded school or training centre, then there is seemingly neither infringement of design right or authorisation of such. Taking the example used earlier, if Acme’s test tube stands were protected only by UDR, Charlie could legitimately copy them for use at his school, but not for sale to others.

Genuine commercial use will still be caught by s 226(1). To avoid infringement, business users will have to confine 3D printing to items not protected by UDR (such as spares within the constraints noted above), or will have to licence the right to produce them. This may well be attractive if it allows dealers to avoid holding large stocks of diverse parts, instead 3D printing them on demand from manufacturer’s authorised patterns. As will be discussed below, sale of self-3D printed unofficial spares, even where not infringing UDR, may fall foul of trade mark and passing off law.

4.3. 3D Printers and Design Protection

In summary, the exemptions for personal and private reproduction of registered designs and the exclusion of non-commercial use from UDR protection mean that the domestic use of a personal 3D printer to reproduce an item will infringe neither registered nor unregistered design protection. Perhaps more surprisingly the exclusive right provided by UDR appears not to cover such public but non-commercial users as schools; subject to interpretation, it may not prevent use in a commercial reproduction bureau. Even for commercial use, many items that are attractive for 3D printing, such as spare parts, may be unregistrable as registered designs and excluded from protection by UDR.

Two further issues arise regarding design protection, however: rights in surface decoration of an item to be reproduced by a 3D printer and rights in the design file used by a 3D printer for reproducing an item. Both of these concern copyright, and so will be covered in the next section.

5. Copyright

Copyright is an unregistered right that arises automatically on creation to protect creative works. Different jurisdictions vary as to the works for which copyright can subsist, but they generally follow Art 2(1) of the Berne Convention,62 which provides that copyright shall be available for “literary and artistic works”, where this includes musical and dramatic works and 2D and 3D artistic works. In the UK, CDPA 1988 s 1(a) recognises four classes of work in which copyright can subsist: literary, dramatic, musical or artistic. Regarding works that a 3D printer might produce infringing copies of, the artistic category is of most relevance.

Copyright infringement requires actual copying of the original. However, copying need not be exact, with “substantial copying” sufficing to infringe. The meaning of “substantial” was considered in Designers Guild63 in which the House of Lords decided that the original and alleged copy had to be considered in their entirety, the test being whether the copier had appropriated a substantial part of the skill and labour of the original author.

In contrast to registered design or UDR there is no threshold for novelty in copyright, with even commonplace works attracting protection if original;64creative merit is not required, merely minimal expenditure of effort.65 In UK law, the circumstances under which copying is not infringement are strictly delineated by a number of “fair dealing” provisions, which include the right to reproduce extracts from a work for purposes of study or review.66

5.1. Artistic Copyright under CDPA 1988, s 4

“Artistic works” are defined at CDPA 1988 s 4. The definition is not straightforward and, given the issues it poses, it is reproduced here:

(b) a work of architecture being a building or a model for a building, or

(c) a work of artistic craftsmanship.

(2) In this Part—

“building” includes any fixed structure, and a part of a building or fixed structure;

“graphic work” includes—

(a) any painting, drawing, diagram, map, chart or plan, and

(b) any engraving, etching, lithograph, woodcut or similar work;

“photograph” means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film;

“sculpture” includes a cast or model made for purposes of sculpture.

The definitions of 2D works such as paintings, drawings and photographs are relatively straightforward, as is that of buildings. However, 3D works are less precisely defined, which is regrettable as these are the category of work where 3D printers offer novel opportunities for copying. The definition of “sculpture” is unhelpfully circular, whilst no definition of the catch-all category of “work of artistic craftsmanship” (WAC) is given at all. Numerous judicial authorities have been advanced regarding the meaning of both sculpture67 and WAC68 in the context of both current and previous legislation, leaving lawyers and scholars alike with a complex legal thicket to navigate. In 2008 Mann J gave judgment in Lucasfilm v Ainsworth69 and in doing so comprehensively surveyed these authorities and sought to elucidate clear tests for the meaning of these two terms.

To qualify as a sculpture, he held that an object had to have “…the intrinsic quality of being intended to be enjoyed as a visual thing” even if it had other uses.70On this basis, Mann J excluded such industrial prototypes as the models in Metix71 (deemed by Laddie J not to be sculpture) and those in Wham-O72 and Breville73 (which had previously been held to be such). In the Court of Appeal, Jacob LJ concurred, whilst emphasising that the key point was the intention of the creator.74 Turning to WACs, he surveyed the disparate opinions of five Law Lords in Hensher75 before turning to the interpretation placed on it in the New Zealand case of Bonz v Cooke,76 where Tipping J held that for a work to be a WAC the author had to combine elements of craftsmanship and art. Whilst this may sound a trivial observation, Mann J explained it in the context of the items under dispute (helmets from the original Star Wars film), noting that whilst their creator had undoubtedly employed great craftsmanship, they had not been made for artistic purposes in their own right.77 Following Lucasfilm it appears therefore that copyright protection as a sculpture or WAC is confined to objects created principally for their artistic merit.

A further important distinction regarding 3D objects is the protection afforded to a graphic design on their surface. Even if not classified as a sculpture or a WAC, such an object may attract design protection. As already discussed, registered design protection includes its outward appearance,78 but UDR specifically excludes surface decoration.79 Such decoration may be protected by artistic copyright, be it 2D or 3D (in the latter case, presumably as a WAC), although if the object has been exploited industrially80this copyright is limited to twenty five years.81

5.2. Artistic Works a 3D Printer May Infringe by Copying

A 3D printer, particularly one capable of colour reproduction, can copy a graphic work by laying down a single layer. Of itself, this poses no novel copyright issues beyond those arising from conventional printers. What is novel, however, is that it may apply such a work to the surface of a 3D item. It is not relevant whether such a design is applied to the surface, or if it extends into it in the manner of the lettering in a stick of rock candy (this being readily achievable with a 3D printer). InLambretta82 Jacob LJ specifically rejected the suggestion that such a distinction could affect whether the appearance of an object was protected by copyright or by registered design;83 it is excluded from UDR protection in either case.

The significance of this can be illustrated by imagining in our scenario that Bridget owns an Acme mobile phone and decides to make a faceplate illustrated with Heidi Hamster, a cartoon character whose rights are owned by Acme. The faceplate itself is unlikely to attract design protection because of the “must fit” provisions of both registered design and UDR. (Related considerations would apply to, for example, a decorated pencil case, the shape of which would probably be deemed too commonplace for protection.) The decoration would be excluded from UDR though (although not registered design, if recorded as part of the registration), but its reproduction on the 3D-printed item would be an infringement by Bridget of the original copyright in it.

However, this assumes that the phone cover is a novel application of the cartoon. But in these days of extensive merchandising this may well not be the case, and the implications of this are significant. Normally the artwork copyright would last for the full copyright term, but via CDPA 1998 s 52 if it has already been applied industrially, e.g. by licensed production of items bearing it, then after twenty five years it may be copied by making articles of any description.84 The original cartoon would still receive full term protection, but its use as a surface design on products would not be infringed once the twenty five-year period had expired.85 If Bridget had copied the design from a sufficiently old product – and some well-known intellectual properties are much older than this ― then her use as surface decoration would be legitimate.

The practical effects of this are not as dramatic as might be imagined since commercial exploitation of such artwork is also constrained by laws regarding trade mark use and passing off, as discussed later. However, as will be noted, it is unlikely that either sanction prevents private use of such artwork. Well-known cartoon characters might thus be available for legitimate personal use on 3D-printed items if they have a long-enough history of commercial exploitation. (As will be noted in the conclusion, purely private copyright infringement is in any case difficult to police.)

It should also be remembered that it is an infringement of copyright in a 2D item to make a 3D representation of it. In the example given, to take a cartoon character and to 3D print a 3D figurine based on it would infringe the cartoon’s copyright – a point established with regard to the “Popeye” cartoon in the 1941 case of King Features Syndicate v Kleeman.86 Again though, if there is sufficient prior commercial exploitation of such items, then their copyright might be drastically shortened via s 52 and they may have fallen out of protection, at least for non-commercial use.

Turning to 3D items, a key question will be whether they fall within the definitions of sculpture or WAC. If not then, like the helmets in Lucasfilm,they will not be protected by copyright. They may enjoy UDR protection, but again this does not apply to non-commercial reproduction. Even if they are protected by copyright, s 52 CDPA may limit the term to twenty five years if they have previously been commercially reproduced, as may well be the case with items small enough to be amenable to 3D printer reproduction.87 Certain forms of artwork are excluded from this provision, however, such as original sculptures.88

5.3. Copyright and 3D Printer Designs

A further complication arises via CDPA 1988 s 51. This provides that the copyright in a design document is not infringed by making an article from it. Introduced to avoid the use of copyright to restrict the sale of third-party spares89 it means that even if prior graphical artwork exists of a product, if it is deemed to be a design document for that product then its copyright is not infringed by making a copy of that item. This was the case in Lucasfilm where the concept artwork for the Stormtroopers was held to be a design document for the helmets, so copying the latter did not infringe copyright in it.90

S 51 has additional and potentially more wide-ranging implications for 3D printer use. To produce an item a 3D printer must have a design file specifying its shape and, if appropriate, surface decoration. Questions thus arise of the legal status of such a 3D printer design file (“3DPDF”) and the IP rights relating to it.

Copyright of 3DPDFs. Is a 3DPDF protected by copyright? It is an original work of authorship and may be protected by literary copyright in the same manner as computer software (which, as a series of instructions, it resembles); in Autospin v Beehive Laddie J accepted, albeit obiter dictum, that such a design file of such type would be so protected.91 Additionally, that diagrammatic instructions for producing an artwork or design are protected by artistic copyright was established in Lerose v Hawick,92although under pre-1988 law, but Whitford J’s reasoning that the instructions need not depict the artwork for artistic copyright to subsist still appears sound.

Design Files as Design Documents. Is a 3DPDF a design document within s 51? S 51(3) defines “design document” as “any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise.” This clearly encompasses a 3DPDF and any doubt should be dispelled by Mackie v Behringer93where Pumfrey J held that a document (a circuit diagram) embodying the topology rather than actual geometric shape of a design was a design document. Since a 3DPDF by definition does embody the shape of a design, it manifestly falls within Mackie.

Thus, although a 3DPDF will be protected by copyright, as a design document its copyright is, by virtue of s 51, not infringed by using it to make an item. It is still an infringement of copyright in a 3DPDF to copy it without authorisation, so trafficking in copies of a manufacturers’ official 3DPDFs for spare parts would be illegitimate. However, if a new 3DPDF is created for an object protected by design right, by, for example, using a 3D scanner to create a model of it from which a 3DPDF is derived, does the new 3DPDF infringe copyright in the original 3DPDF, or indeed any original design document? This point was considered in Mackie, and in the previous case ofBBC v Pally94 which it relied on.

BBC v Pally concerned the production of garments depicting the “Teletubby” characters. The claimants said that these were 2D infringing copies of their 3D creations. Laddie J held admissible an argument that the Teletubbies did not enjoy copyright (the position later adopted in Lucasfilm) and the only infringement could have been of original artwork showing them. He then held that as such artwork was a design document (there being no prior artwork as in Kleeman) then s 51 applied to it. Crucially, he interpreted s 51(1) as meaning that copyright in a design document was not infringed by any formof copying of the subject article, including making a 2D copy of it. Thus, the garments did not infringe copyright in any original Teletubby design artwork, as they had not been directly copied from them.95

Although BBC v Pally was a preliminary hearing, Laddie J’s reasoning was specifically approved by Pumfrey J in Mackie. He held that reverse-engineering a circuit diagram from a device did not infringe copyright in the original manufacturer’s circuit diagram, as the latter was a design document. It is nonetheless still true that s 226(1)(b) CDPA 1988 makes it an infringement of design right to make a design document with the aim of allowing the item protected by that right to be reproduced. But as with ss 226(1)(a), this only applies to commercial use.

The significance of these rulings for use of personal 3D printers can be illustrated by considering the use of a 3D printer to make a copy of a vase produced by Acme PLC. Acme owns copyright in the design drawings for the vase, and it is assumed here that the vase is protected either by design registration or UDR. Bridget reverse-engineers a 3DPDF for the vase and uses it to make her own copy of it. She also posts her 3DPDF on the Internet for other 3D printer users to download and use. Charlie downloads it and prints out his own vase. Have Bridget or Charlie infringed any of Acme’s rights?

Acme’s copyright in the vase design documents is not infringed by Bridget creating a new 3DPDF, by virtue of s 51(1) as interpreted in BBC v Pallyand Mackie. Nor therefore is it infringed by Bridget posting the 3DPDF to the Internet.

Acme’s design right in the vase design documents is not infringed by Bridget creating a new 3DPDF, as s 226(1)(b) only applies where there is commercial intent.

Acme’s copyright of design documents is not infringed either Bridget or Charlie making a copy of the vase, by simple operation of s 51(1).

Acme’s design protection is not infringed by either Bridget or Charlie making a copy of the vase, as neither registered design nor UDR is infringed by private and non-commercial use.

It thus seems that, within the UK at least, the provisions of design and copyright law are such that it is not an infringement to create 3D printer designs for items protected by design right, to disseminate such designs or to use a 3D printer to make copies of said item for personal, private use. As noted earlier, it will likely be an infringement to 3D-print designs based on or embodying pre-existing artwork, although in some cases the copyright for such artwork will have been greatly shortened if it has previously been industrially applied. Even so, many household items and spares will not be covered by artistic copyright and so may be legitimately reproduced by personal 3D printing.

6. Patent

Will use of a personal 3D printer infringe patent rights? As a registered right, there will be no question of law as to whether a patent exists, and the question is therefore whether 3D printer use to make a copy of a patented item falls into any statutory exemptions from infringement.

A patent grants an exclusive right to the owner for a defined period (normally 20 years) to make the subject invention, which is infringed by another making or disposing of the item without permission or offering to do so.96 “Making” includes manufacturing the invention from new and also, as explained in United Wire v Screen Repair Services (Scotland),97undertaking such comprehensive refurbishment of a patented item as to effectively remanufacture it. “Dispose” is interpreted by Terrell as commercial sale or loan or proposals to do so.98

If Bridget buys a patented product from Acme, creates a 3DPDF for it and 3D-prints a copy, she has on the face of it infringed Acme’s patent. It might be thought that the 3D printer described earlier would be unable to reproduce any invention likely to meet the requirements for novelty and inventive step needed for grant of a patent.99However, simple but genuinely innovative ideas still gain patent protection, such as the Haberman “Anyway” baby feeder100 that could in principle be copied in flexible plastic by a 3D printer. Furthermore, as 3D-printer technology improves, the range of patentable inventions the machines can 3D-print will widen, so the question is worth considering.

If Bridget makes the invention privately and for non-commercial purposes she does not infringe Acme’s patent.101This exception matches that for registered designs, and Cornish notes that, as there, this does not apply to non-commercial uses that are not private, such as educational or charitable ones.102 Equally, “experimental” use is non-infringing;103 this might for example cover testing the capability of a 3D printer to reproduce a complex, patented invention.

However, should Bridget then upload her 3DPDF to allow others to make the design, she may encounter problems. Unlike registered design law, the Patent Act includes a specific provision against providing others with the means to infringe a patent. S 60(2) provides that Bridget so infringes if she “…supplies or offers to supply in the United Kingdom…any of the means, relating to an essential element of the invention, for putting the invention into effect…”. Is a 3DPDF such a means? Supplying a kit of parts may constitute “means”,104 but it is not obvious that a 3DPDF counts as such. One interpretation would be that a 3D printer, raw materials and a 3DPDF for a patented item together count as a kit for making that item, on which basis the 3DPDF is the essential “means” that the 3D printer user would require to infringe the patent, thus bringing supply of it within s 60(2). The opposite view would present the 3DPDF as a document describing the patent, which of course the patent itself does – albeit not necessarily with the level of detail necessary to directly make the item. Judicial or legislative clarification may be required to settle the question of whether a patent is infringed by providing instructions allowing a 3D printer to make it. What is clear, despite the convoluted wording of the legislation,105is that Bridget cannot escape s 60(2) even if the use she intends others to make of the 3DPDF is, like her own, private and non-commercial.106

Where a patented invention is capable of being made by a 3D printer, it therefore appears that personal and private use is permissible, but disseminating 3DPDFs (even freely and with the intent that they be for personal and private use) may be an infringing act. Furthermore, the use of a 3D printer to repair a patented item for commercial purposes would only be legitimate if it stayed within the “remanufacture” boundary set by United Wire.

7. Trade Marks and Passing Off

7.1. Trade Marks

Trade marks are a registered right serving to indicate the trade origin of goods.107Once registered, they last for as long as the mark is kept in use. Trade marks are infringed by use in the course of trade of the same mark on identical goods;108infringement also arises through use of a similar mark on the same goods, or the same mark on similar goods.109 Sufficiently famous marks may be protected against competing use on any form of goods.110 Trade marks traditionally took the form of distinctive words or graphical devices, but more recently their definition has broadened to include shapes and combinations of colours. This widens the scope for infringement of a trade mark via 3D printing; the distinctive narrow-waisted Coca-Cola bottle is a trade mark of the Coca-Cola Company,111 and making a bottle of that shape might infringe it. It is not necessarily the case that it would, though, as there may an exemption for private use, or the mark may not be being used in what is deemed “the trade mark sense”.

The exemptions from design protection and patent for purely personal use have already been noted. Is there a similar exemption for trade mark use? It appears uncontroversial that purely personal use cannot be “in the course of trade” and so cannot infringe. Giving the Advocate-General’s Opinion in the ECJ hearing ofArsenal v Reed, Colomer AG noted that it would not infringe BMW’s trade mark for an individual to put it on a key ring. Indeed, he went further and cited both use in artistic work (e.g. Warhol’s use of Campbell soup tins) even for reward, and educational use, as being non-commercial use against which the mark owner had no rights. 112

Commercial use of a trade mark is likely to infringe it, though. If Bridget owns an Acme car she might create 3DPDFs for some of its spare parts, to allow herself to 3D print copies should she need them. One of these is a cap for the windscreen wash reservoir. It is of commonplace design and has to have a diameter and screw pitch to fit the reservoir opening, so it is assumed that no design protection subsists. It does however have Acme’s name moulded into it, a trade mark registered in numerous categories including vehicle parts, and Bridget’s 3DPDF includes this. Bridget makes the 3DPDF available online, and it is downloaded by Dave, who owns a small garage. One of Dave’s customers needs an Acme reservoir cap, so Dave uses his workshop 3D printer to make one from Bridget’s 3DPDF and sells it. He infringes no design right or design document copyright by doing so, but he has sold goods bearing Acme’s trade mark, which he has therefore infringed. If, though, Bridget had removed or omitted the trade mark, Dave could have legitimately labelled the cap as being for an Acme™ car as there is specific provision for a mark to be used to indicate the intended purpose of a product, such as a spare part.113

There are other circumstances where commercial use of a trade mark may not infringe it, depending on whether the mark is being used in “the trade mark sense”, i.e. as an indication to customers that there is a link between the owners of the mark and the person using it.114The law here is complex and subject to conflicting ECJ decisions,115 but as an example it was held in Opel v Autec that sale of a model car bearing Opel’s trade mark logo was not infringing use as the mark’s use was for verisimilitude rather than as a badge of origin. Similar issues may arise from the use of personal 3D printers due to the ease of including trade marks as surface decoration.

7.2. Passing Off

A form of IP protection related to trade marks is the common-law tort of passing off. Passing off arises where the goodwill of a trader is appropriated in a way that causes confusion as to the origin of goods, as when a competitor packages or presents products in a way misleadingly similar to that of a more established and reputable trader. Passing off requires three elements, per Lord Oliver in the “Jif Lemon” case:116 that the offended party has goodwill (i.e. an established positive reputation in trade) amongst the public; that there has been misrepresentation as to the origin of goods; and that actual damage to the offended party has resulted.117

Passing off only applies to non-private use, as one cannot mislead oneself. In the car parts scenario, Dave might misrepresent the origin of the reservoir cap, either explicitly (if it bears Acme’s logo) or implicitly (if he supplies it when asked for an Acme spare).118 Presuming Acme’s goodwill, Dave has cost it trade (so damage) and is liable for passing off. Although this is in no way different in principle to existing cases of the supply of counterfeit or misleadingly-described spares, the advent of low-cost 3D printers may increase the scope for such deception – particularly, as in Jif Lemon, where goodwill exists in the distinctive shape of goods. As noted earlier, passing off may arise even where other rights, such as copyright of industrially-reproduced artwork, have expired, if the resulting goods are sold so as to appropriate the goodwill of the original rights holder.

8. Conclusion

Hitherto a technology limited to the production within industry of models or prototypes, 3D printing is, like the computer in the 1970s, becoming available to the domestic enthusiast. Like the home computer, personal 3D printing has the potential to radically change aspects of the way in which we live; we can even envisage a society where home manufacturing of many items is the norm. However, as with home computers, such developments may have wider effects. The convergence of the Internet, digitised music and media players has had dramatic consequences for music copyright. 3D printing technology may have similar implications for artistic copyright, design right, trade marks and patents, but in a rather more diverse legal framework.

Indeed, it is clear that – within the UK at least – personal use of 3D printing technology does not infringe the majority of IP rights. Registered design and patent explicitly exempt personal use, trade mark law has been interpreted as doing so, and UDR is only applicable to commercial use. There is no such exemption for copyright, but the CDPA 1988 has been interpreted so as to provide numerous instances where copyright does not subsist for certain 3D items or is substantially shortened. Furthermore, the experience of music copyright is that purely local and personal infringements (e.g. format shifting from CD to MP3) are in practice impractical to pursue. Many attractive uses of a 3D printer, such as to make spare parts, are in any case likely to be permitted by specific legal exceptions. It thus appears that the legal environment, in the UK at least, is surprisingly favourable towards the use of low-cost 3D printers for personal, and even in many cases commercial, purposes.

Equally clearly, rights holders are likely to be concerned if personal 3D printers become widespread and effective enough to impinge on commercial exploitation of their IP rights. Indications as to how they might react can be seen from the recent history of music copyright infringement via the Internet. Both technical and legal responses have been tried, including the use of Digital Rights Management (DRM) technology and proposals to strengthen legislative measures.119 Will these be applied to restrict low-cost 3D printing?

Technical measures would quickly founder on the problem that, unlike music file-sharing, personal 3D printing does not produce an exact copy that can be digitally signed or protected with DRM. It is the sharing of (as seen, legitimately) reverse-engineered designs that is the issue, not original design documents. Although scanners and printers have incorporated anti-forgery measures to detect attempts to duplicate banknotes, such techniques are very specifically targeted at one well-defined item.120 Whist commercially-produced low-cost 3D printers might be configured to only use authorised DRM-protected 3DPDFs digitally signed by the rights holder, such measures would seriously constrain their usefulness and make them unattractive compared to open-source 3D printers.

It is worth noting, however, that this same point indicates that it may be some time before the level of detail and accuracy attainable by personal 3D printers becomes sufficient to seriously impinge upon the market for quality products, as distinct from utilitarian goods or spare parts (the reproduction of which, as has been noted, is in any case less likely to infringe IP rights.) Unlike digital audio and video copying, which produces perfect copies, copying of articles via 3D printing will be readily distinguishable from the original.

Legal measures might entail removing the personal use exemptions for registered designs, or making UDR enforceable against any copying. However, doing so would require amending the underlying EC Directive and would seriously prejudice the right of individuals to repair products they own. Furthermore, as Part 1 of this paper has explained, there may be policy grounds for seeking to encourage domestic manufacture of household products to reduce the environmental impact of the large-scale transport of them. It to be hoped that such factors might mitigate legislative attempts to extend the scope of IP rights, or reduce the personal and non-commercial use exceptions to them, in such a way as to constrain the development of 3D printing.

The most optimistic evangelist of low-cost 3D printing would probably admit that the household domestic 3D printer is years, if not decades, from widespread use. Its impact will be gradual, as unlike file-shared MP3s it will not immediately provide for the reproduction of faithful copies. Rather, as its ease-of-use, fidelity and range of materials increases, so will its attractiveness and range of applications. This should, at least, allow for a more measured consideration of the legal issues that will arise from such use. In the longer term, personal 3D printers may conceivably lead to radical changes in the nature of the manufacturing economy; the IP implications of such further developments have so far been imagined only in science fiction.121

* Centre for Commercial Law Studies, Queen Mary, University of London.

29 It is accepted in Scottish law that the decisions of the English Court of Appeal in interpreting the Patents Act 1977 and similar IP legislation apply throughout the UK. See R Black et al (eds) The Laws of Scotland: Stair Memorial Encyclopedia, vol 19 (Edinburgh: Butterworths, 1995), para 814.

64 K Garnett, G Davies and G Harbottle, see note 30 above, s 3-127. In Infopaq International A/S v Danske Dagblades Forening (C-5/08), [2009] ECDR 16 the ECJ held that originality required some level of expression of intellectual creation, although the threshold for this was for national courts to determine.

Timing: For most patent applications, a third-party prior art submission can now be filed before the first Office Action is mailed. In cases where the USPTO examines a patent application quickly, such submissions can be filed within six months of publication. The USPTO will not consider any submissions after the notice of allowance.

Effective Date: These submissions can be filed starting Sept. 16, 2012. The submissions may be filed in any pending application.

Requirements: These submissions may be done anonymously and can be submitted electronically. The submissions must include:

(1) a list identifying the items being submitted; (2) a concisedescription of the relevance of each item listed; (3) a legible copy of each non-U.S. patent document listed; (4) an English translation of any non-English language item listed; (5) a statement that the submission complies with the statutory provision; and (6) the required fee ($0 if fewer than three-documents submitted for a first submission, $180 otherwise). The submissions will be screened for these requirements and if not compliant, the submission will not be entered in the application. The third party is not required to serve the applicant with a copy of the submission.

Results: The examiner is required to consider compliant third-party submissions in preparation for the next Office Action. The documents in the submission will be listed on the face of the issued patent, if considered by the examiner.

Quality Art: The best submissions will contain on-point, relevant prior art. Examiners will likely not review submissions containing nonrelevant or cumulative prior art. So, unlike the typical practice of citing prior art in an Information Disclosure Statement, it is helpful to review the prior art and make a judgment call on the relevance before submitting it.

Be Concise: The explanation of the relevance of each item should contain only enough information to point the examiner to the pertinent disclosure in the prior art. Additional explanations will not only waste time and costs, but will most likely be ignored by the examiner.

Submit Electronically: The EFS-WEB system will be modified to allow submissions to be filed electronically. Indeed, the EFS-WEB system will be modified to contain a specific category under which these submissions must be submitted, else they will be deemed non compliant. In the event any submission is seemed non-compliant by the USPTO division created to screen them, the third party will be notified electronically if an email address is provided.

Limited Submissions: Each submission is limited to 10 items of prior art. Multiple submissions (each of up to 10 items) can be made, as long as a fee is paid for each submission. So cumulative prior art is best avoided for cost reasons. It also makes for a less concise submission.

Explaining Known Art: Rather than submitting new prior art, a third party may re-submit existing prior art of record in the file, along with an explanation of additional information in that prior art. In most instances, that additional information might explain a point of view not considered by the examiner. As well, this additional information might point to parts of the prior art not discussed in any rejection and reply.

Scope: The submission can be especially useful for limiting and defining the scope of the claims. If properly presented, the submission can explain the prior art in such a manner that regardless of whether that prior art reference is relied on by the examiner, the disclosure in the prior art can be used when construing the claims.

Other Questions of Patentability: The submission can include any published document relevant to the examination of the application. In other words, the submission need not be restricted to merely issues of novelty and obviousness. Accordingly, if a published document (which would arguably include a court decision) has bearing on issues that can be raised under 35 U.S.C. § 101 or 35 U.S.C. § 112, it can — and should be — submitted to bring such issues to the attention of the examiner.

Applicant Submissions: If third-party submissions containing prior art are deemed non-compliant, they are not supposed to be entered into the record. But if an applicant is somehow made aware of non-compliant submissions, that applicant should submit that prior art via an Information Disclosure Statement to avoid any claim of inequitable conduct during litigation.

Competitive Monitoring: These third-party prior art submissions will require increased monitoring programs of competitors’ published applications so that they can be submitted timely and effectively. So factor the additional resources needed for this competitive monitoring into your management programs.

Today marks three months since some of the key new mechanisms of the AIA went into effect. A good opportunity to report on the uptake for two sections — submissions to the PTAB, and third party prior art submissions. Given the critical mandate of the AIA to empower our stakeholder community to play an active role in assisting the USPTO in its ongoing commitment to patent quality, initial usage of the applicable new provisions is worth reporting, to say the least.

To put the lead first, we’re encouraged by the third party submissions and PTAB filings we’re seeing under the new rules, to date.

We’ve received 88 PTAB submissions, 73 for inter partes reviews and 15 for covered business method reviews. We’re on our way for meeting our FY 13 expectations, and our PTAB Chief Judge James Smith puts it well when he says “momentum is building.”

We’ve received 270 prior-art submissions from third parties, also in line with expectations. The leading art group receiving submissions? TC 3700, which includes many software-related inventions such as those found in electronic gaming devices and medical equipment. And when looking at the spread of submissions as a whole, it’s important to note that there are not a lot of classifications untouched. With many technologies being represented, as opposed to just one or two, we’re seeing that the AIA is indeed supporting the patent system broadly.

So what do we learn from these numbers? First, they demonstrate that the public finds valuable the new ways to interact with the USPTO. Second, they will contribute quickly to improved patent quality. With the PTAB proceedings, we will see valid patents upheld while addressing those that may require correction. With prior art submissions, examiners will be able to consider public submissions and ensure high quality work during the review process.

We’ll continue to monitor PTAB and prior-art submissions. The numbers suggest we’ve got some great new tools at our collective disposal.

Are submissions truly limited to “prior art” as the title of your blog entry suggests? I thought any information of potential relevance to patentability could be submitted. Do any of the third-party submissions thus filed include information that is not prior art?Posted by Pat Rules on December 17, 2012 at 09:38 PM EST #

I am aware of at least one submission in which a non-prior art reference (Wikipedia article) was found acceptable for a third party prior art submission. However, that may have been an error. Moreover, users should be aware at least regarding third party prior art submissions that “concise statements” had better not be too concise or the entire submission will be denied entry of record. The concise statement for each submitted reference should expressly identify at least one claim and at least one specific element or step of the claim to which the reference is asserted to relevant. The clerk responsible for initially reviewing the submission for acceptibility will not refer to the application claims. Even those references whose relevance to the claims may be apparent on their face to anyone who has read the claims, can be deemed to have failed to comply with the concise statement requirement and the entire submission, including other prior art references, most clearly relevant and properly supported by the concise statement, will be ignored. There is a qualitative requirement to the statements that is NOT disclosed in the PTO filing instructions or the rules themselves.Posted by John Jamieson on December 18, 2012 at 03:20 PM EST

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“Post-it Notes” may be a famous trademark owned exclusively by 3M and recognized throughout the world, but it was not originally invented by 3M, contrary to the ads. It was, in fact, invented by Alan Amron in 1973. Court papers clearly document the invention’s time line (Amron vs 3M entire original Federal complaint click here:Federal Case Index # 97-CV-7281-TCP/MLO, Amron vs. 3M, Minn, Mining). Now, more than three decades later, the truth is coming out.

New York, NY (PRWEB) February 9, 2011

This year, on the 30th anniversary of the Post-it Notes invention, publishers are now courting its original inventor to tell the real story of how this little item has become an indispensable part of modern society.

Going back to the year 1974, inventor Alan Amron was selling and giving away samples of his newest creation at a trade show held at the Americana Hotel in New York City. Amron called this item “Press-on Memos,” the same sticky notes the world has since come to know as “Post-it Notes”. The world has been told this is a product straight from the innovative minds of the 3M company; it says so in their television ads. “Nothing, however, could be farther from the truth,” says Amron.

Amron says 3M executives were impressed with his sticky notes product when they saw it. He had worked out the technical details, including, but not limited to, the formulation of the rubber cement — both adhesive enough to stick, but not so adhesive as to leave a mess. Amron gave 3M executives samples and documentation of his Press-on Memos. They gave him their business cards and told him he would soon be contacted. No such contact was made, so he called them. He was then told that after careful review, the creative 3M engineers felt the product could not be made without gumming up the machinery and that it would be too expensive. Amron thought the deal with 3M was dead in the water.

But apparently, as Amron observed, 3M was more impressed than they let on or “some extra creativity was infused upon the already creative minds at 3M in the intervening years. 3M employed their ingenuity and corporate might to not only solve the formerly-insurmountable technical and cost problems, but also to claim the product was their own.”

All this has been laid out in court documentation, Amron vs 3M entire original Federal complaint click here:

Amron has since invented numerous products and he feels the time has come to set the record straight for his invention “that almost every civilized person on the planet has used to make life a little more convenient.”

Closer examination of the settlement reveals that Amron is free to claim that he invented “Press-on Memos”, and he is also free to license or manufacture his invention as he made it 37 years earlier, though he is not entitled to any of the money 3M has made from “Post-it Notes.”

There is nothing in writing preventing 3M from claiming they invented Post-it Notes, so 3M continues to publicly claim they invented Amron’s invention. This is what Amron finds disturbing. “Life continues as normal for 3M, and they continue to be the mythological company of innovation they portray on television and glossy ads, and saying it often enough makes it true in the eyes of an information-overloaded culture.”

So now the 62-year-old New York inventor is coming out as the “original inventor” of press on sticky memo. “Turns out, this corporate giant can’t legally prevent me from telling the truth, the whole truth, and nothing but the truth.” And, apparently, publishing companies are finding Amron’s truth compelling. The interest he’s generating has publishers courting him. He hopes one day to see his story in book form, where it will trump what he calls “the great 3M marketing fiction.”

When you were growing up, did you ever try taking apart a family appliance only to fail at reassembling it? For most kids, when Mom and Dad see the toaster splayed out across the kitchen floor, that’s usually the end of their mechanical aspirations. And then there is Dr. Lonnie Johnson, who as a child graduated from appliances to making rocket fuel. One time, a batch caught on fire. In the kitchen. In one of his mother’s saucepans. After the flames and black smoke cleared, he found that a couple of the kitchen chairs had holes where the flaming liquid had splattered and burned like napalm. But rather than stifling his curiosity, Lonnie’s parents handed him a hot plate and told him he needed to cook his rocket fuel outside.

When Inventors Eye asked Lonnie what got him interested in the way things worked, he said his dad would let him watch over his shoulder as he tinkered. “My father was not educated, but he was able to repair most things around the house, and that taught me some valuable skills,” Lonnie related. Receiving these valuable skills and encouragement from his parents lead him on the path to advanced degrees in mechanical and nuclear engineering from Tuskegee University and a successful career working on Space Shuttle Atlantis, the B-2 Stealth Bomber, and NASA’s Galileo and Cassini missions, until he got the urge to become a full-time independent inventor. Johnson now has over 100 patents or pending patents.

Many people may recognize Lonnie as the inventor of the Super Soaker (patent number 5,074,437), but he is much more than just squirt guns. The good doctor is currently figuring out ways to reduce humanity’s dependence on fossil fuels and particularly the United States’ reliance on foreign oil. He is working on what he calls the “next generation” battery and the “next next generation” battery. The next generation battery uses a solid-state configuration and will replace the current batteries in hybrid and electric vehicles. The next next generation battery relies on sophisticated lithium glass to produce power. Lonnie said that this advanced battery is about one-and-a-half to two years away from commercial production. Both of these technologies do not involve fluids in the production and storage of electric power—a true innovation over today’s batteries.

Another promising project is the Johnson Thermoelectric Energy Conversion System or JTEC (pronounced “JAY-tek”). This solid-state heat engine converts heat energy into electrical energy by using pressure to force hydrogen atoms through a membrane-electrode assembly, stripping the electrons from the atoms and moving them through an external circuit. The JTEC is estimated to be about twice as efficient as today’s solar Stirling engines, which use moving parts to generate mechanical energy.

Lonnie used much of the proceeds from the Super Soaker to fund the JTEC and now relies on funding from grants and other resources. Despite the JTEC’s promise, Lonnie said the project has taught him that “you may not want to invest all your funds in research.” If he had to do it all over again, he said he would probably have worked on the heat engine first and then the batteries—not the other way around.

Lonnie wrote his first patent application for a digital distance measuring device and received patent number 4,143,267 in 1979. The invention, as stated in the patent, “uses a mechanical analog-to-digital converter to measure distance. The distance measured is supplied in binary encoded decimal to an electronic decoder for decoding and subsequent decimal display.” Lonnie explained that this device preceded the use of digital optical readers in applications such as CDs and DVDs. “I was having so much fun working on advanced space systems that I didn’t take time to focus on it,” he said. By the time he realized he wanted to be an independent inventor, it was too late. The measuring device was “the big fish that got away,” he quipped.

At first, Lonnie had also tried to write the patent for the Super Soaker himself, but after getting an initial rejection letter from the United States Patent and Trademark Office, he contacted a patent attorney. Children all over the world should rejoice at this wise decision, as he went on to receive the patent for the now famous and immensely profitable squirt gun.

Lonnie has some advice for inventors. “Know that no one has a lock on any technology,” he said. “Those who have skill in the art can understand it and make it better. When talking with investors or people that could possibly buy or license your technology, make sure that you demonstrate how the invention works and why it will make money. You can’t make money without getting people interested in the invention.”